Ex Parte Szabo

Board of Patent Appeals and Interferences

Oct 27, 2011

10985800 (B.P.A.I. Oct. 27, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/985,800 11/10/2004 Zoltan Szabo 02581-P0631A 8528
24126 7590 10/27/2011
ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
EXAMINER
BACHMAN, LINDSEY MICHELE
ART UNIT PAPER NUMBER
3734
MAIL DATE DELIVERY MODE
10/27/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ZOLTAN SZABO
____________________

Appeal 2009-015002
Application 10/985,800
Technology Center 3700
____________________

Before: MICHAEL W. O'NEILL, FRED A. SILVERBERG, and
WILLIAM V. SAINDON, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-015002
Application 10/985,800
2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b).
Claim 1, reproduced below, is illustrative of the claimed subject matter.
1. A grip arrangement for a medical instrument, which
instrument has a handle with two substantially rod-shaped grip
parts each with a grip surface, said grip arrangement comprising
for each said grip part a rod-shaped grip shell which can be
secured in a detachable manner on said respective grip part so
that said respective grip shell is arranged on said respective grip
surface of said respective grip part, each said grip shell having a
grip surface which is of a larger size compared to said grip
surface of said grip parts.

References
The Examiner relies upon the following prior art references:
Slaughter
Desimone
Harrison
Aebi
Stone
US 920,092
US 3,894,336
US 4,268,963
US 6,261,296 B1
US 6,533,797 B1
Apr. 27, 1909
Jul. 15, 1975
May 26, 1981
Jul. 17, 2001
Mar. 18, 2003

Rejections
I. Claims 1, 2, 4-8, 10-13, and 19-21 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Desimone and Harrison.
II. Claims 1, 9, and 18 are rejected under § 103(a) as unpatentable over
Slaughter and Harrison1.
III. Claims 3 and 17 are rejected under § 103(a) as unpatentable over
Desimone and Harrison.

1 The Examiner’s statement of rejection states this rejection is under 35
U.S.C. § 102(b). Ans. 5; Fin. Rej. 4. However, this is clearly a
typographical error, as both the Examiner and Appellant treated this
rejection as being under § 103(a). App. Br. 10.
Appeal 2009-015002
Application 10/985,800
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IV. Claim 14 is rejected under § 103(a) as unpatentable over Desimone,
Harrison, and Stone.
V. Claims 15-16 are rejected under § 103(a) as unpatentable over
Desimone, Harrison, and Aebi.
VI. Claim 22 is rejected under § 103(a) as unpatentable over Desimone,
Harrison, and Aebi.

SUMMARY OF DECISION
We REVERSE.

OPINION
In each rejection, the Examiner proposes that it would have been
obvious to substitute the rod grips of the pruner of Harrison for the finger
loops in the scissors of Desimone and/or Slaughter, to make their scissors
“easier to hold.” Ans. 4, 5. Appellant argues the rejections as a group.
Appellant argues that the Examiner improperly concluded that it would have
been obvious to modify the surgical scissors of Desimone (Rejections I and
III-VI) or the configurable shears of Slaughter (Rejection II), both with
detachable finger loops, to include the rod-shaped grips taught in Harrison.
App. Br. 10. In particular, Appellant argues that the resulting combination
would be “practically inoperable” for their intended uses because the
scissors would “clearly lack the finger holes necessary for easy opening.”
Id. Accordingly, the dispositive issue in this appeal is whether the Examiner
properly found that the substitution of rod grips for finger loops would make
the scissors “easier to hold.”
In this case, the Examiner states that it would have been obvious to
modify the shape of Desimone’s scissor grip “depending on what shape
would make them easier to hold by the user.” Ans. 4. As evidence, the
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Application 10/985,800
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Examiner provides Harrison, and concludes that it would have been obvious
to modify the finger-receiving handles of Desimone to have the rod-shaped
handles of Harrison “depending on the application.” Id. The Examiner
stresses that the cutting end of the scissors is unaffected by any
modifications to the gripping end, such that the scissors still are “operable.”
Ans. 9-10.
We find that Desimone’s finger holes, by their nature, afford simple,
one-handed operation because only two fingers are necessary to precisely
and accurately hold and operate the device when cutting sutures and
bandages. See also Desimone, abstr. (describing the scissors as useful for
cutting surgical bandages, sutures, and the like). The Examiner offers no
support for the finding that having two handles (rods), instead of finger
holes, would make Desimone’s scissors “easier to hold by the user” based on
its “application.” It is not apparent to us how removing the two finger holes
makes the scissors easier to hold, especially in light of the precise and
delicate nature of their use. Instead, it would seem to us that it would be
more difficult to hold because the precise, simple, two-finger operation
afforded by the holes would no longer be available (i.e., a different
finger/hand hold would be required to open, close, and move the scissors),
and, thus, we find it would make it more difficult to hold and make precise
and accurate cuts as intended. Accordingly, the Examiner’s finding that the
combination would make the scissors of Desimone easier to hold is
conclusory and lacking a factual basis.
Likewise, the Examiner offers no support for the finding that having
two handles, instead of finger holes, would make Slaughter’s scissors “easier
to hold by the user” based on its “application.” Similar to our finding above,
removing the finger holes would make Slaughter’s scissors more difficult to
Appeal 2009-015002
Application 10/985,800
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hold because the holes are the structure that allows a user to hold the scissors
with two fingers from one or the other hand. See, e.g., Slaughter, 1:17-24
(describing the scissors as changeable to accommodate the fingers of either
hand). Accordingly, the Examiner’s finding that the combination would
make the scissors of Slaughter easier to hold is conclusory and lacking a
factual basis.
Each of the Examiner’s rejections relies on a proposed combination of
Desimone or Slaughter and Harrison, which we have found above to be
lacking a sufficient factual basis. As such, each of the Examiner’s rejections
is in error. See In re Warner, 379 F.2d 1011, 1016-17 (CCPA 1967) (The
examiner has the initial duty of supplying the requisite factual basis and may
not, because of doubts that the invention is patentable, resort to speculation,
unfounded assumptions, or hindsight reconstruction to supply deficiencies in
the factual basis).

DECISION
For the above reasons, we reverse the Examiner’s decision regarding
claims 1-22.
REVERSED

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